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Takeaway: Patent challengers relying on operating manuals and other printed materials included with products sold prior to the critical date of a challenged patent should not rely solely on the sale of the product to demonstrate such documents are “printed publications” within the meaning 35 U.S.C. § 102.

A recent decision by the Patent Trial and Appeal Board (Board) highlights an important difference between the various post-grant proceedings created by the America Invents Act, and the potential consequences of failing to account for these differences. Of relevance to this post are the limited grounds of unpatentability upon whichinter partes reviews (IPRs) can be instituted. Specifically, IPRs can only be based on prior art consisting of patents and printed publications. Thus, unlike post-grant reviews, IPRs cannot be based on the sale of a product prior to the critical date of the challenged patent.

In Lantz Medical, Inc. v. Bonutti Research, Inc., IPR2015-00995, petitioner Lantz Medical, Inc. (Lantz) sought inter partes review of U.S. Patent No. 7,404,804 (the “‘804 Patent”), directed to a finger orthotic device. In its IPR petition, Lantz asserted that Claim 1 of the ‘804 Patent was anticipated by an operating manual included with a finger splint kit sold more than one year prior to the critical date of the ‘804 Patent.

Although Lantz asserted that the operating manual was available more than one year prior to the critical date of the ‘804 Patent, the Board found such assertions insufficient to demonstrate that the operating manual was a “printed publication” within the meaning of 35 U.S.C. § 102. In particular, the Board stated that Lantz “provides no explanation or evidence to support the contention that the JACE H440 operating manual is a printed publication, stating only that the JAC H440 [sic] ‘was on sale at least as early as 1992 – the date of publication of the operating manual.’” Thus, the Board found Lantz’ reliance on the sale of product insufficient to demonstrate that the operating manual included with the product was a “printed publication” within the meaning of 35 U.S.C. § 102.

Although the Board found Lantz’ petition deficient in several other respects, this decision serves as a reminder to patent challengers that non-traditional publications, such as operating manuals and other printed materials included with products sold to the public, warrant an explanation of why the documents are “printed publications” within the meaning of 35 U.S.C. § 102. Failure to include such an explanation may result in denial of a petition for inter partes review.

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